American Association of Blood Banks v. Boston Paternity, LLC et al

Filing 39

MEMORANDUM OPINION. Signed by Judge Deborah K. Chasanow on 10/16/09. (sat, Chambers)

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND AMERICAN ASSOCIATION OF BLOOD BANKS v. BOSTON PATERNITY, LLC, et al. : : : : : Civil Action No. DKC 2008-2046

MEMORANDUM OPINION Presently pending and ready for resolution is a motion for reconsideration of the court's July 28, 2009 order on

jurisdictional discovery filed by Plaintiff American Association of Blood Banks. The issues are fully briefed and the court now

rules pursuant to Local Rule 105.6, no hearing being deemed necessary. For the reasons that follow, Plaintiff's motion for

reconsideration will be denied. I. Background Plaintiff American Association of Blood Banks ("AABB") is an international 2,000 in not-for-profit organization, and consisting of

nearly involved

institutional blood banking,

members molecular

8,000

individuals and related

testing,

biological therapies.

Incorporated under the laws of the state

of Illinois, Plaintiff maintains its only office in Bethesda, Maryland. Plaintiff owns federal trademarks and service marks

for AABB (U.S. Registration No. 3,203,260) and AABB (Stylized)

(U.S. Registration No. 3,195,463) for use in connection with its services in the field of biological therapies (collectively, the "AABB marks"). From its Maryland headquarters, Plaintiff develops

standards relating to relationship and DNA testing, an important and often required element in determining U.S. citizenship and immigration status. AABB.org and Plaintiff also operates websites under the domain goods an names, and where users it can access In to

AABB.info about the

information addition, it

services

provides. intended

maintains

accreditation

program

improve the quality and safety of blood and blood products for qualifying accreditation individuals program and has institutions. various Plaintiff's levels.

membership

Institutional membership is only available to facilities that collect, process, test, or administer blood, or to facilities that provide cellular therapies or molecular testing services. Affiliate membership is available to companies in the health profession that do not otherwise qualify for institutional

membership status or are not licensed or registered by the U.S. Food and Drug Administration. Unlike institutional members, who

have limited rights to use the AABB marks pursuant to AABB's Code of Ethics and Trademark Usage Guidelines ("Guidelines"),

2

affiliate members are prohibited from using the AABB marks in any manner by the Guidelines. Defendant Boston Paternity, a New Hampshire corporation

with its principal place of business in New Hampshire, acts as a broker for DNA testing services that determine paternity and immigration status. Boston Paternity markets "nationwide

service" and also works with numerous foreign embassies abroad. (Paper 19, Ex. L). In January 2005, Boston Paternity applied Since that

for and received affiliate status with Plaintiff.

time, Boston Paternity has renewed its affiliate membership with Plaintiff on an annual basis by mailing its membership dues to a P.O. Box in Baltimore, Maryland. After Boston Paternity obtained affiliate status with

Plaintiff, it posted the AABB logo on its homepage as well as on the Spanish, French, and Russian versions of its website. In

addition, in 2007, Defendants Boston Paternity and PST, a member of Boston Paternity and a New Hampshire corporation with its principal place of business in New Hampshire, registered four domain names consisting of the AABB marks: AABB.net, AABB.us, AABB.name, and AABB.bz. Boston Paternity then used these domain During this

names to host websites advertising its services.

time, John Quintal, President of PST and Boston Paternity, and a New Hampshire citizen and resident, also registered "AABB" as a 3

trade name with the New Hampshire Department of State for use in association with "DNA Testing Services." (Paper 19, Ex. F).

When Plaintiff learned of these activities, it sent ceaseand-desist letters to Boston Paternity, warning that its use of the AABB marks violated AABB's guidelines for affiliate members. When that method proved unavailing, Plaintiff brought an

administrative proceeding before the World Intellectual Property Organization ("WIPO") requesting transfer of the AABB.net domain name. On February 21, 2008, WIPO ruled in Plaintiff's favor and

ordered Boston Paternity to transfer the AABB.net domain name to Plaintiff. Despite losing at the WIPO proceeding, Boston Paternity, PST, and John Quintal continued their "unauthorized uses" of the AABB marks: names in March 2008, of PST the registered AABB marks three additional

domain

consisting

AABBtest.net, On August 6,

AABBtest.us, and AABBtest.org.

(Paper 1, at 2).

2008, Plaintiff filed an action in this court against Boston Paternity, PST, John Quintal, Joseph Quintal, and Ryan Quintal, asserting Protection trademark competition (1) Act, violation 15 of § the Anticybersquatting (2) service Consumer mark and

U.S.C. 15

1125(d); U.S.C. §

infringement, and

1114(1); of

(3)

unfair origin,

false

designation

15 U.S.C. § 1125(a); (4) false description and representation, 4

15

U.S.C. § 1125(a);

and

(5)

service

mark

and

trademark

infringement and unfair competition under Maryland common law. (Paper 1). also Plaintiff citizens alleges and that Joseph of Quintal and Ryan are

Quintal,

residents

New

Hampshire,

directors of either PST or Boston Paternity. On September 4, 2008, John Quintal, proceeding pro se,

filed a "motion to change venue" on behalf of Boston Paternity, PST, Joseph Quintal, and himself. (Paper 6). He asserted that

it would be unreasonable for the court to exercise personal jurisdiction over Defendants because they did not have

sufficient contacts with the state of Maryland.

The same day,

John Quintal also filed separate motions to dismiss on behalf of PST, Joseph Quintal, and himself. (Papers 7, 8, and 9). He

requested that all claims against PST and himself be dismissed because AABB was attempting to pierce the corporate veil

impermissibly by bringing an action against them. he argued that all claims against Joseph

In addition, should be

Quintal

dismissed as Joseph Quintal was a minor and had not engaged in any meaningful business activities with PST. On September 8, 2008, the court mailed a letter to John Quintal, informing him that, because he was not an attorney, he could only represent himself, and not the other Defendants, in this action. (Paper 10). The court also advised him that his 5

motions to dismiss claims against PST and Joseph Quintal would be marked as "filed in error" and that the other Defendants could only appear through counsel. In response, John Quintal

requested that the court convert his "motion to change venue" to a motion to dismiss for lack of personal jurisdiction on behalf of Boston Paternity, PST, Joseph Quintal, and himself. 13). The court granted this request as to John (Paper Quintal

personally, but again informed him that he could not represent any of the other Defendants. (Paper 15).

On September 26, 2008, Defendants Boston Paternity, PST, John Quintal, filed and a Joseph motion Quintal, to dismiss jointly for represented of by

counsel,

lack

personal

jurisdiction. John Quintal

(Paper 16). to their

Defendants attached an affidavit by asserting that no Defendant

motion,

resided in Maryland, had an office in Maryland, owned property in Maryland, from had a collection On site July in 28, Maryland, 2009, or derived granted

revenue

Maryland.

court

Defendants' motion to dismiss for lack of personal jurisdiction as to Defendants PST, Inc., John Quintal, and Joseph Quintal and dismissed plaintiff's complaint against those defendants. (Paper 29). take Additionally, the court granted Plaintiff's request to limited LLC jurisdictional with respect discovery to 6 its of Defendant Boston in

Paternity

promotional

efforts

Maryland that occurred before Plaintiff filed its complaint.

On

August 11, 2009, Plaintiff filed a motion for reconsideration of the court's July 28th order on jurisdictional discovery pursuant to Federal Rules of Civil Procedure 54(b) and 60(b).

(Paper 30). II. Standard of Review Federal Rule of Civil Procedure 54(b) governs

reconsideration of orders that do not constitute final judgments in a case. Rule 54(b) provides that "any order or other

decision, however designated, that adjudicates fewer than all the claims or the rights and liabilities of fewer than all the parties . . . may be revised at any time before the entry of judgment adjudicating all the claims and all the parties' rights and liabilities." Fed.R.Civ.P. 54(b).

In the Fourth Circuit, the precise standard that should govern a motion for reconsideration of an interlocutory order is unclear. Fayetteville Investors v. Commercial Builders, Inc., In determining whether it order, a district court's

936 F.2d 1462, 1472 (4th Cir. 1991). should reconsider an interlocutory

consideration is not bound by the Rule 60(b) standard, though the court may at least reference parts of the Rule 60(b)

standard.

Id. at 1470; Am. Canoe Ass'n v. Murphy Farms, Inc.,

326 F.3d 505, 514 (4th Cir. 2003) ("Motions for reconsideration 7

of interlocutory orders are not subject to the strict standards applicable judgment."). to motions for reconsideration of a final

Thus, the court's analysis is guided by Rule 60(b)

but is not bound by its strictures. Under Rule 60(b), a party may obtain relief from a judgment or final order based upon (1) mistake, inadvertence, surprise, or excusable neglect; (2) newly discovered evidence that, with reasonable diligence, could not have been discovered in time to move for a new trial under Rule 59(b); (3) fraud . . . misrepresentation, or misconduct by an opposing party; (4) the judgment is void; (5) the judgment has been satisfied, released or discharged; it is based on an earlier judgment that has been reversed or vacated; or applying it prospectively is no longer equitable; or (6) any other reason that justifies relief. Fed.R.Civ.P. 60(b). Reconsideration of a judgment after its

entry is an extraordinary remedy which should be used sparingly. Pacific Ins. Co. v. Am. Nat. Fire Ins. Co., 148 F.3d 396, 403 (4th Cir. 1998), cert. denied, 525 U.S. 1104 (1999). III. Analysis Plaintiff asks the court to reconsider whether Plaintiff should be allowed to take jurisdictional discovery of Defendant Boston Paternity's contacts with Maryland after the commencement of Plaintiff's suit and to take jurisdictional discovery of

Defendants John and Joseph Quintal and PST, Inc. 8

Plaintiff

argues that the court should reconsider its order "by analogy to Rule 60(b)(2), (3), and (6)" because (1) Plaintiff has

discovered new evidence that it could not have discovered before the court's July 28th order; (2) the new evidence casts doubt on Defendant John Quintal's affidavit on which the court relied; (3) the new evidence indicates that further limited discovery would be probative of the court's jurisdictional analysis; and (4) some legal authority indicates that courts should consider evidence from before and after a complaint is filed to determine personal jurisdiction in cases of continuing tortious conduct. Plaintiff argues that it has obtained new evidence that should persuade the court to reconsider its order. 2009, Plaintiff's Boston attorney Paternity's made a routine and On August 7, of

examination

Defendant

English

Spanish

websites.

(Paper 30, at 7).

Plaintiff's counsel noticed that the websites

had a "locations" feature that allowed him to view a list of locations where Defendant had operations, though he noted that Maryland was omitted from the list. visited the New York locations page. (Id.). Plaintiff's counsel

In the URL bar of his web

browser, Plaintiff's counsel replaced the state name "New York" with the word "Maryland" and was redirected to a hidden page that described Defendant Boston Paternity's business activities, such as the cities served by Defendant Boston Paternity, in 9

Maryland. was no

(Id. at 8). link from the

Plaintiff concedes that "[b]ecause there respective websites to these newly-

discovered webpages, they are not easily located by an Internet user who is not already aware of the Internet address for the specific webpages." Defendants (Id.). that the court, in making its

argue

determination as to personal jurisdiction, should not consider any evidence from after the date on which Plaintiff filed its complaint, and in any event, that the new evidence the Plaintiff has presented is insufficient to merit the court's

reconsideration. only consider

Defendants state that the court was correct to from before Plaintiff's complaint was

evidence

filed because "[a] defendant's contacts with a forum state, for specific jurisdiction purposes, are measured at the time the claim arose." Tuschman, 904 (Paper 28, at 17, quoting Marriott PLP Corp. v. F.Supp. 461, 467 (D.Md. 1995)). Defendants

disclose that the webpages that Plaintiff encountered did not exist before August 6, 2009. (Paper 37, at 7). Defendants

contend, therefore, that those webpages should be excluded from the court's that jurisdictional the webpages inquiry. that Furthermore, Defendants were

explain

Plaintiff

encountered

prototypes for Maryland locations pages that were only posted to the Internet in error and that the pages were not an attempt by 10

defendants to solicit Maryland customers. ¶ 5, 7-9). At the outset, it is not clear

(Id. at 9, attach. 2

whether

it

is

even

appropriate for the court to consider Plaintiff's new evidence, which materialized whether after Plaintiff personal filed its complaint. exists, In some

deciding

specific

jurisdiction

courts have considered a defendant's conduct before and after a plaintiff has filed a complaint. See, e.g., Beverly Hills Fan

Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1563 (Fed. Cir. 1994), cert. denied, 512 U.S. 1273 (1994) (stating that, in a patent infringement case involving a continuous tort, "it would be arbitrary to identify a single moment after which defendant's contacts with the forum necessarily become irrelevant to the issue of specific jurisdiction."). Even if it is proper for the court to consider Plaintiff's new evidence, however, Plaintiff has not made a sufficient

showing to change the court's ruling.

Plaintiff has essentially

achieved the discovery it wants to take on Defendant Boston Paternity's website by virtue of Defendants' response to

Plaintiff's motion.

With their response, Defendants provided

affidavits that explain the short-lived existence of the mock-up Maryland location pages on their websites and averred that they did not conduct any business through those pages. 11 (Paper 37,

attach. 1 and 2). webpages, the new

Given Defendants' explanation regarding the evidence does not call into question the

veracity of Defendants' previous statements.

Therefore, the new

evidence that Plaintiff has presented, coupled with Defendants' response, will not alter the court's previous analysis regarding personal jurisdiction as to Defendants Boston Paternity, John or Joseph Quintal, or PST, Inc. and no jurisdictional discovery beyond the limits of its July 28th order will be permitted. IV. Conclusion For the foregoing reasons, Plaintiff's motion for

reconsideration will be denied.

A separate Order will follow. /s/ DEBORAH K. CHASANOW United States District Judge

12